Q1: Can printed flat works be protected under the Patent Law as a design?

A: No. Paragraph (f) of Article 25 of the Patent Law provides that, no patent right shall be granted to a design which is used primarily for the identification of pattern, color or the combination of the two on printed flat works. Section 6.2 of Chapter 3 of Part One of Guidelines for Patent Examination (2010) makes a further stipulation that where an application for a patent for design meets the following three requirements, the application falls under Article 25.1(6) and no patent right shall be granted: (1) the product for which the design is applied is a plane printed matter; (2) the design is made of patterns, colors, or their combination; and (3) the design serves mainly as indicator. The so-called “serves mainly as an indicator” states that the main purpose of design is to make it convenient for the public to identify the products involved, the origin of service, etc.

Q2: Do you think it useful to submit a reference view of the state in use when the purpose of the application is just for reference and it will not be included in the scope of protection as a design under the application?

A: Although the submission of a reference view of the state in use will not enlarge the scope of protection for a design, it may be helpful and make it easier for the examiner to understand the design because it is generally used to indicate the use of the product of the design. In addition, determining whether the comparative design constitutes a conflicting application for the patent concerned must be made in accordance with all of the content of the published comparative design. For example, if the published comparative design includes reference view of the state in use, even though the reference view of the state in use contains design which has not been claimed, the nonclaimed design could be used to help make a comparison with the patent concerned to decide whether they are identical or substantially identical.

Q3: I am from a U.S. company. We have a product for which we applied for a patent for a design. Now we want to apply for the protection of the design in China. However, there is no longer a six-month priority period. Should we apply for a patent in China?

A: Firstly, the U.S. patent system is different from that of China. In the United States, novelty of creation or invention shall not be affected, even if it has been published or used in public, bought out, or sold within one year before the date of the application. However, the law of China upholds absolute novelty, which means that the design for patent shall not belong to the prior art. According to Section 2.1 of Chapter 3 of Part Two of Guidelines for Patent Examination (2010) the prior art includes any technology which has been disclosed in publications in China or abroad, or has been publicly used or made known to the public by any other means in China or abroad, before the date of filing (or the priority date where priority is claimed). Therefore, if your design has already been published or used in public before the date of filing in U.S., its novelty shall be affected when applying for a patent for design in China. Similarly, the publication of an application in the U.S. will also have an adverse impact on its novelty in China. In conclusion, if the priority period of six months has passed, it may be granted a patent for design provided that you submit your application without priority as soon as possible and that its novelty can be satisfied, namely, it has not been published (including the publication of the application for a patent in the U.S.) and used.

(Answered by Xing Yue, Patent Attorney of LuSheng Law Firm)